WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION L'Oreal v. Tracey Johnson Case No. D2008-1721 1. The Parties
The Complainant is L'Oreal, of Paris, France, represented by Cabinet Dreyfus & Associés, of France.
The Respondent is Tracey Johnson, of Long Beach, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (“eNom”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name.
On November 10, 2008, eNom transmitted by email to the Center its verification response, confirming that the language of the registration agreement is English, but disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on November 20, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 24, 2008.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2008.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 24, 2008.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 22, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the parent of the global cosmetics and beauty group founded in 1909. According to the Complaint it has traded under its present name since 1963. It currently employees more than 63,000 employees in 130 countries. In 2007, it realised more than EUR 17 billion in consolidated sales from over 500 brands and more than 2,000 products.
The Complainant has been carrying on business in the United States of America since at least 1953.
Apart from the address given when registering the domain name, not much is known about the Respondent. The disputed domain name was registered on January 28, 2008. It resolves to a website which appears to be a fairly standard iGoogle or Google Partnerpage, customised to have the title . 5. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Before turning to a consideration of these factors, it is necessary to acknowledge that no Response has been received.
eNom's registration agreement obliges a person, such as the Respondent, who registers a domain name through eNom to maintain and update the registrant's administrative, technical and billing contacts so that they are at all times current, complete and accurate.
The Center has served a copy of the Complaint on the Respondent by courier at the addresses the Respondent has provided to eNom, as well as at the Respondent's other contact details as provided by the Policy and the Rules. Accordingly, the Complaint has been properly served on the Respondent and the Respondent has had due notice of the dispute.
In these circumstances, paragraph 5(e) of the Rules requires the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the complaint. This is not a simple rubber-stamping, however, as paragraph 15(a) of the Rules requires the panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complaint includes evidence that the Complainant has at least seven trademarks registered in the United States of America (“US”) and at least another nine registrations around the world. These include:
- US trademark L'ORÉAL (word mark in stylized characters) No. 0540541 registered on April 3, 1951 (renew) in class 03.
- US trademark L'OREAL (word) No. 0661746 registered on May 13, 1958 (renew) in class 03.
- International Registration L'ORÉAL (word) No. 184970 registered on May 23, 1955 (renew) in classes 03 and 05.
- International Registration L'ORÉAL (word) No. 230114 registered on March 28, 1960 (renew) in classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34.
- International Registration L'ORÉAL DE PARIS (word) No. 238337 registered on December 10, 1960 (renew) in class 03.
- International Registration L'ORÉAL (word) No. 328403 registered on November 28, 1966 (renew) in classes 35, 36, 37, 38, 39, 40, 41 and 42.
- International Registration L'ORÉAL (word) No. 394615 registered on December 12, 1972 (renew) in classes 22 and 26.
In addition, the Complainant relies on rights in L'OREAL as an unregistered trademark arising from its very extensive use and notoriety. There can be little doubt that the Complainant has such rights deriving from its use in many parts of the world.
On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself to the Complainant's proved trademarks: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420.
The domain name contains in substance the entirety of the Complainant's L'OREAL trademark. It differs from the Complainant's principal trademark, L'OREAL in three ways: (1) the addition of the word “blog”, (2), the omission of the apostrophe between “l” and “o” and (3) the addition of the gTLD “.com”.
It is well established that the inclusion of the gTLD in a domain name, which is a technical requirement for the operation of the domain name system, may be disregarded.
Similarly, minor typographical differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes are inadequate to avoid a finding of confusing similarity. In fact, it appears that the apostrophe is an invalid character in names to be registered in the “.com” gTLD.
The term “blog” is descriptive. Many, if not most, people will recognise it as the popular or common term for the website functionality more formally described as “web log”. So, for example, it is defined uncontroversially in Wikipedia:
“A blog (a contraction of the term ‘Web log') is a Web site, usually maintained by an individual with regular entries of commentary, descriptions of events, or other material such as graphics or video. Entries are commonly displayed in reverse-chronological order. “Blog” can also be used as a verb, meaning to maintain or add content to a blog.”
Adding a descriptive term to a trademark is usually insufficient to avoid a finding of confusing similarity. Standing back and viewing the domain name as a whole, it is clear that many people seeing the domain name will assume that it indicates a “blog” about or related to L'OREAL. Accordingly, the Panel readily concludes that the disputed domain name is confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:
(i) “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then the evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.
Here, the Complainant contends that the Respondent is not affiliated with the Complainant or its business in any way. It states that it has not authorised the Respondent to use or register the Complainant's trademark or to register it in a domain name. The domain name does not appear to be derived from the Respondent's name. Nor is there any evidence that the Respondent has been using the domain name in any way other than the “holding” page which appears to be a fairly generic iGoogle or Google Partnerpage.
The Respondent has not sought to contradict any of these propositions.
In this connection, it is significant that the distinctive component of the domain name, in effect L'OREAL, is an invented or coined term with no descriptive or generic meaning. It has significance only as an identifier of the Complainant and its products.
The fact that the domain name points to a webpage which is in effect a “holding” or “parking” page is also significant.
There have been cases where panels have been prepared to accept a reseller, even an unauthorised reseller, of a complainant's products as engaging in bona fide commercial use. See e.g. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Volvo Trademark Holding AB v Auto Shivuk, WIPO Case No. D2005-0447; and ITT Manufacturing Enterprises Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments Inc., WIPO Case No. D2008-0936. In those cases, however, there must (as paragraph 4(c)(i) of the Policy states) actually be use or concrete evidence of preparations to use the domain name for a permitted purpose.
Similarly, the cases where domain names have been legitimately used for criticism sites or information sites about the trademark owner have depended on the site actually being used for the legitimate noncommercial or fair use or, once again, concrete proof of appropriate preparations to use the domain name for that purpose. This is the point lying behind cases such as Standard Chartered PLC v. Purge I.T.,WIPO Case No. D2000-0681 and Wachovia Corporation v. Alton Flanders,WIPO Case No. D2003-0596.
The Respondent has not advanced such justifications. Moreover, there is nothing on the content of the website to which the disputed domain name resolves, as contained in the print outs included in the Annexes to the Complaint, which refers to or relates to the Complainant or its business, other than the bald title .
In these circumstances, the Panel concludes that Complainant has adequately demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As the terms of the paragraph make clear, these are examples only and not an exhaustive enumeration of the circumstances in which registration and use in bad faith are found.
Bearing in mind that the distinctive component of the domain name, “loreal” or really L'OREAL, is a coined or invented term and having regard to its international reknown, there can be little doubt that the Respondent was aware of the Complainant's trademark when the Respondent registered the disputed domain name.
In addition, the Respondent has been found on the record in this case not to have rights or legitimate interests in the disputed domain name.
The Respondent did use the services of a Whois Protection Service when registering the disputed domain name. The Complainant argues that this shows a bad faith attempt to conceal the Respondent's identity in an attempt to frustrate the Policy. The Panel does not consider, however, that the use of such a service demonstrates bad faith.
Apart from the fact that the Respondent does not appear to have given false registration information, the present case is substantially on all fours with the situation in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. While the use of fraudulent registration details did contribute to the finding of registration and use in bad faith in the Nuclear Marshmallows case, its absence in the present case does not lead to a different conclusion.
Having regard to the fame and significance of the Complainant's trademark as denoting only the Complainant and its products, and the finding that the Respondent does not have rights or legitimate interests in the disputed domain name, the Complainant has in these circumstances raised a strong inference that the Respondent has registered and used the domain name in bad faith. The Respondent has not sought to challenge that inference in any way. In these circumstances, the Panel is entitled to conclude that the Respondent could not say anything to rebut this inference. Accordingly, the Panel finds that the disputed domain name was registered and used in bad faith. 6. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: February 2, 2009
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